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Bocacina v Boca: a costly affair, but who pays for what?

The Intellectual Property Enterprise Court (“IPEC”), whichsupersededthe
Patents County Court for England and Wales in 2013, is acclimatising nicely to
its new name, though it has been a few months since the first decision to come
from the IPEC (Bocacina Ltd v Boca Cafes Ltd [2013]
EWHC 3090 (IPEC)) reached the database of the British and Irish Legal
Information Institute BAILII: this decision was reported on by Darren Smyth on
the IPKat back in October, here.

This Kat is in a particularly reflective and sentimental
mood, since the costs decision in this case was published just last week (the
costs decision can be read in full on BAILII here). So what
was the costs ruling about?

Background

Just to recap, the trial judgment, delivered on 14
October 2013, involved a successful passing off claim by the claimant, who
owned a restaurant/café in Bristol called ‘Bocabar’, against the defendant who
opened up another café called ‘Boca Bistro Café’ in close proximity to the
claimant’s restaurant. The court held that a significant number of members
of the public would be likely to be confused into believing that the two cafes
were connected, given their close proximity and the common use of the word
‘Boca’ in their respective names. Accordingly, a successful claim for passing
off was established, and the defendant’s registration for the word mark BOCA
BISTRO CAFÉ was held to be invalid.

Costs judgment

The “raison d’etre” of the IPEC is to provide a
cost-effective alternative to IP litigation. Daniel Alexander QC stated in
his judgment that

‘the object of this court is,
however, not only to decide cases more efficiently and cheaply but also to help
SMEs resolve disputes without the need for a trial. Quite often, the biggest
obstacle to early resolution in such cases is costs….one of the ways in which
this court can achieve this aim is to take account of reasonable admissible
offers made to settle a case at an early stage of proceedings in determining
what costs should be paid, if an action is pressed to trial in the face of such
offers.’

It is also worth reminding ourselves that under the Civil
Procedure Rules CPR
Rule 44.(2)(4), in deciding what order (if any) to make about costs,
the court will have regard to all the circumstances, including –

(a) the conduct of all the
parties;

(b) whether a party has succeeded
on part of its case, even if that party has not been wholly successful; and

(c) any admissible offer to
settle made by a party which is drawn to the court’s attention, and which is
not an offer to which costs consequences under Part 36 apply.

In this case, the claimant claimed £23,460 worth of costs.
Both parties put forth their submissions in relation to costs (although the
defendant’s submissions were 21 days late), and the defendant asked the court
to pay particular attention to an offer that was put forward in December 2012,
just after the Particulars of Claim were served. In its offer the
defendant had proposed

(1) to change its name to a name
which didn’t include the word ‘Boca’,

(2) that it would not use the
name Boca as part of its trading style in Bristol or the surrounding areas,
and

(3) that it would surrender its
UK trade mark registration. The defendant had then asked for 9 months to
implement these proposals.

The claimant rejected the proposal, arguing in its skeleton
that the offer made no contribution to costs incurred in the case and that, in
relation to the timing issue, the defendant ”demanded” a “wholly unreasonable 9
months” in which to re-brand, when all that needed to be done was repaint the
signage, reprint menus and update the restaurant websites’.

Daniel Alexander QC did agree that there was some merit to
the claimant’s arguments, but ultimately found that the offer that had been
made by the defendant was not materially worse than the sums which the claimant
eventually received in the first judgment. In its final decision, the court stated that the approach it
should take would be for the claimant to have

‘(1) 100% its costs relatively
generously assessed (by IPEC standards) down to the date of the Defendant’s
offer in December 2012, (2) ... a reasonable proportion of its costs, but not
all of them, after the date of that offer’.

(In the court's assessment, this was 50% of their costs from
that date). Additionally the claimant should not have to bear any of the
defendant’s costs.’ Some of the factors the court took into consideration
included the well reasoned case put forth by the claimant in its Particulars of
Claim, the defendant’s 2012 offer, and ‘striking the balance between providing
a fair level of recovery of costs for meritorious claimants, while encouraging
early resolution of proceedings without a trial.’

The court awarded the final amount of £10,750 in costs to
the claimant. In his judgment, Daniel Alexander QC added:

‘... overall, the sum I am
awarding provides a reasonable sum by way of costs to the Claimant (it is about
50% of its total costs ignoring photocopying) but it does not unjustly penalize
the Defendant by awarding full costs against it, having regard to their offer’.

This Kat believes this was a reasonable and fair approach to
take and one which was wholly in the spirit of the new remit of the IPEC.

Bocacina v Boca: a costly affair, but who pays for what?
Reviewed by Unknown
on
Wednesday, January 22, 2014
Rating: 5

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